By Sherri Oslick --
In a nonprecedential opinion, the CAFC has affirmed the decision of the Board of Patent Appeals and Interferences dismissing the interference at issue after finding the appellant's claims invalid for failure to comply with the written description requirement of 35 U.S.C. § 112, first paragraph.
In 1995, Adang and Kemp filed U.S. Patent Application No. 08/461,240, claiming plants containing insecticidal resistance genes. Later in prosecution, Firoozabady was added as an inventor, and in 2001 the applicants (collectively "Adang") added five new claims, on the basis of which they requested an interference against U.S. Patent Nos. 5,004,863 and 5,159,135, both to Umbeck. Thereafter, Adang added three additional claims and filed a renewed request for an interference against the Umbeck patents. The Board declared an interference in November 2005, with the count directed to cotton plants transformed to contain "selected foreign DNA."
Umbeck moved to have Adang's involved claims ruled unpatentable for failure to meet the written description requirement, arguing that Adang's specification only supported plants transformed with insecticidal resistance genes, not plants transformed with "selected foreign DNA" as recited in the count. The Board granted Umbeck's motion, and because claims must meet the requirements of 35 U.S.C. § 112, first paragraph, in order to be part of an interference, the Board dismissed the interference as Adang no longer had standing to continue.
Adang argued two points on appeal. First, Adang argued that Umbeck had failed to present any expert testimony on the issue of how one of skill in the art would have interpreted the Adang specification. Noting that invalidity for failure to meet the written description requirement can be based solely on the language of the specification, and that the Board conducted a thorough review of the Adang specification and carefully documented its factual findings, the CAFC concluded that the Board's position that the application's intrinsic evidence did not provide adequate written description was supported by substantial evidence in the record.
Adang next argued that the Board erred in finding that a particular reference cited in the specification was not incorporated by reference; the reference was Firoozabady's U.S. Patent Application No. 07/076,339. According to Adang, the teachings of the '339 application, along with the disclosure in the '240 specification, fulfilled the written description requirement of the involved claims. Umbeck countered by asserting that the Board correctly found that the '240 application did not specifically identify the portions of the '339 application Adang intended to incorporate, and that the reference in the '240 application was insufficient to incorporate the entirety of the '339 application. The relevant passage read: "[c]otton was transformed essentially as disclosed by Firoozabady, E. et al. (1987) Plant Mol. Biol. 10: 105-116, and Firoozabady, E. U.S. patent application serial no. 076,339." The CAFC agreed with the Board that it was not clear that Adang intended to incorporate any part of the '339 application, noting that the '240 specification used the phrase "incorporated by reference" eight times, but not with reference to the '339 application. As such, the CAFC concluded that Adang intended to treat the '339 reference differently than those incorporated by reference using specific incorporation language.
Adang v. Umbeck (Fed. Cir. 2007)
Nonprecedential disposition
Panel: Circuit Judge Bryson, Senior Circuit Judge Friedman, Chief District Judge Keeley
Per curiam
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